Ex Parte Bonko et al

Board of Patent Appeals and Interferences

Apr 29, 2010

10324662 (B.P.A.I. Apr. 29, 2010)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________________

Ex parte MARK L. BONKO, and TIMOTHY MICHAEL ROONEY
____________________

Appeal 2009-011548
Application 10/324,662
Technology Center 1700
____________________

Decided: April 29, 2010
____________________

Before MICHAEL P. COLAIANNI, KAREN M. HASTINGS, and
JEFFREY B. ROBERTSON, Administrative Patent Judges.

COLAIANNI, Administrative Patent Judge.

DECISION ON APPEAL
This is a decision on an appeal under 35 U.S.C. § 134 from the
Examiner's final rejection of claims 1 through 8, 10 through 12, and 15
through 20, which are all of the claims pending in the above-identified
application. We have jurisdiction pursuant to 35 U.S.C. § 6.
We AFFIRM.
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Application 10/324,662

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STATEMENT OF THE CASE
The subject matter on appeal is directed to an agricultural pneumatic
tire. Claim 1 is illustrative:
1. An agricultural pneumatic tire comprising:

a casing having an axis of rotation and an equatorial
plane perpendicular to said axis of rotation; and

a tread disposed radially outward of said casting, said
tread including a circumferential inner tread and a plurality of
lugs each projecting radially outward from said inner tread; and

each of said lugs having a trailing edge, a leading edge
that contacts the ground before said trailing edge as said tire
rotates about said axis of rotation in a direction of travel, a first
side edge proximate to said equatorial plane, a second side edge
connected by said leading and trailing edges with said first side
edge, and a ground-contacting surface positioned
circumferentially between said leading edge and said trailing
edge, said equatorial plane passing through each of said lugs,
said leading edge having a curvilinear contour that is free of
outside corners, said tread including at least first, second and
third regions extending circumferentially about said tread, and
each of said first, second and third regions extending one-third
of an axial distance measured between said first and second side
edges of each of said lugs;

said first region being proximate to said equatorial plane,
said second region being between said first and third regions;
and

wherein said first region has a net-to-gross ratio that is at
least 29% greater than a net-to-gross ratio of said third region.

As evidence of unpatentability of the claimed subject matter, the
Examiner relies upon the following references:
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Hylbert 3,603,370 Sept. 7, 1971
Baus 5,733,394 Mar. 31, 1998
Himuro1 (as translated) JP 61-249807 Nov. 7, 1986

The Examiner maintains the following rejections:
1) Claims 1-5, 7, 8, 10, 11, and 15-19 under 35 U.S.C. § 102(b) or, in
the alternative, under 35 U.S.C. § 103(a) over Japan 807;
2) Claim 6 under 35 U.S.C. § 103(a) over Japan 807 and further in
view of Hylbert; and
3) Claims 12 and 20 under 35 U.S.C. § 103(a) over Japan 807 and
further in view of Baus.
With respect to rejection (1), Appellants' arguments focus on
independent claims 1 and 5. Accordingly, we address Appellants' arguments
regarding the rejection with respect to these claims only. See 37 C.F.R. §
41.37(c)(1)(vii).
Rejections (2) and (3) are not separately argued and thus stand or fall
with our decision regarding rejection (1)'s § 103 rejection (App. Br. 7).

REJECTION (1): The rejection under § 102 or § 103 over Japan 807

The § 102 rejection

ISSUE
Did the Examiner err in finding that Japan 807 teaches a pneumatic
tire comprising a “first region of the tread ha[ving] a net-to-gross ratio that is
at least 29% greater than a net-to-gross ratio of said third region” as recited

1 Since both Appellants and the Examiner refer to this reference as "Japan
807," we do the same.

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in claims 1 and 5 within the meaning of § 102? We decide this issue in the
affirmative.

PRINCIPLE OF LAW
In order to anticipate, a reference must identify something falling
within the claimed subject matter with sufficient specificity to constitute a
description thereof within the purview of § 102. In re Schaumann, 572 F.2d
312, 317 (CCPA 1978).

FINDINGS OF FACT
1. The Specification discloses that "'Net-to-Gross Ratio' means the ratio
of the normally loaded and normally inflated tire tread rubber that
makes contact with a hard flat surface, divided by the area of the
tread, including non-contacting portions such as grooves as measured
around the entire circumference of the tire." (Spec. 6).
2. Appellants do not specifically dispute the Examiner's finding that "[i]t
is noted that net to gross (area of contact / total area of tread) is related
to negative ratio (area of grooves / total area of tread) by the following
expression: Net-to-gross (NTG) = 100% - negative ratio." (Compare
Ans. 5 with App. Br. 4-7 and Reply Br. 4-7).
3. The Examiner states that
Japan 807 teaches a central area (11) having a width of 32%
tread width W (70 mm / 220 mm x 100%) and a net to gross of 65%
(negative ratio = 35%). Japan 807 also teaches a side area (12, 13)
having a width of 34% tread width W (75 mm / 220 mm x 100%) and
a net to gross of 45% (negative ratio = 55%). The net to gross of the
central area is 144% of the net to gross the side area (65% 145% x
100%). In the illustrated example, the net to gross of the central area
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is therefore 44% greater than the net to gross of the side area. Japan
807 teaches that the side areas can have a negative ratio of 70% (NTG
= 30%). When a negative ratio of 70% (NTG = 30%), instead of a
negative ratio of 55% (NTG = 45%), is used for the side areas in the
example, the central area has a net to gross of 217% of the net to gross
of the side area (65%/30% x 100%). In other words, the net to gross of
the central area can be 117% greater than the net to gross of the side
area.
. . . .
[Since] the "first region" of Japan 807's example has a net
to gross 44% greater than the "third region" (falling within the
claimed range of at least 29% greater). . . Japan 807's example tire
inherently has a tread in which a "first region" of the tread has a net to
gross at least 29% greater than the net to gross of the "third region" of
the tread as claimed.

(Ans. 5-7). In this regard, Japan 807 teaches that the "[t]otal width W of
road surface portion 10 is 220mm, width W of central portion is 70mm,
widths W2 and W3 of both side portions 12, 13 are 75mm." (Japan 807,
p. 7). Japan 807 teaches that the "[n]egative in the central area . . . is
around 35%, and negative of both side areas 12, 13 is about 65%."
(Japan 807, pp. 9-10). Japan 807 also teaches that the "negative of both
side areas 12, 13 . . . [is] below about 70% negative." (Japan 807, p. 9).

ANALYSIS AND CONCLUSION
Appellants argue that
Although Japan 807 makes various statements about the negative
ratio . . . of these different areas, the statements cannot be properly
used to make assumptions about the relationship between one-third
regions defined between the lug side edges, as recited in independent
claims 1 and 5. Appellants submit this is exactly what the Examiner
has done.

(App. Br. 4-5). We agree.
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Given Factual Finding 3 above, the Examiner finds that "the net to
gross of the central area is . . . 44% greater than the net to gross of the side
area." Alternatively, the Examiner also finds that "the net to gross of the
central area can be 117% greater than the net to gross of the side area." (FF
3).
As Appellants correctly stated above, however, these net to gross
ratios calculated by the Examiner are based on Japan 807's central area and
side areas, which are "different areas" than the first and third region required
by claims 1 and 5 (i.e., each region extends one-third of the axial distance
measured between the first and second side edges of each lug). (See FF 3).
Indeed, rather than measuring the first and second side edges of each
lug, Japan 807 teaches that its central area and side regions measure the total
width of the road surface portion. (FF 3). Japan 807 also teaches that the
"[n]egative in the central area . . . is around 35%, and negative of both side
areas . . . is about 65%," which correspond to a net-to-gross of 65% for the
central area and 45% for each of the side areas. (FF 3).
Japan 807, however, does not teach a region that is one-third of the
axial distance measured between the first and second side edges of each lug,
much less one having a net-to-gross ratio that is at least 29% greater than a
net-to-gross ratio of the third region.
In addition, we note that the Examiner's statement that "Japan 807's
example tire inherently has a tread in which a 'first region' of the tread has a
net to gross at least 29% greater than the net to gross of the 'third region'" is
mere speculation as Japan 807 is silent regarding any specific negative ratio
or its related net-to-gross ratio vis-à-vis the regions defined by claims 1 and
5 (i.e., each region that extends one-third of the axial distance measured
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between the first and second side edges of each lug). The Examiner simply
provides no persuasive reasoning or identifies any credible teaching in Japan
807 to support this finding.
Thus, it follows that the Examiner erred in finding that Japan 807
teaches a pneumatic tire comprising a “first region ha[ving] a net-to-gross
ratio that is at least 29% greater than a net-to-gross ratio of said third region”
as recited in claims 1 and 5 within the meaning of § 102.
Accordingly, for the reasons stated by Appellants in the Briefs and
above, we reverse the Examiner's rejection of claims 1-5, 7, 8, 10, 11, and
15-19 under 35 U.S.C. § 102(b) as anticipated by Japan 807.

The § 103 rejection

ISSUE
Did the Examiner err in determining that Japan 807 would have
suggested a pneumatic tire comprising a “first region ha[ving] a net-to-gross
ratio that is at least 29% greater than a net-to-gross ratio of said third region”
as recited in claims 1 and 5 within the meaning of § 103? We decide this
issue in the negative.

FINDING OF FACT
4. Appellants do not specifically dispute the Examiners' statement that
It would have been obvious to one of ordinary skill in the art to
provide a pneumatic agricultural tire with lugs such that the "first
region" (one third distance between 1st edge and 2nd edge) has a
NTG that is at least 29% greater (or at least 55% greater) than the
NTG of the "third region" (one third distance between 1st edge and
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2nd edge) since (1) Japan 807 suggests varying the net-to-gross of a
lug pattern pneumatic tire for off road such that the net-to-gross in the
central area 11 is larger than the net-to-gross in the side areas 12, 13
so as to improve wear resistance and riding comfort, (2) Japan 807
teaches that the net to gross of the side areas may be as low as 30%
and (3) Japan 807 describes a specific example in which the central
area has a width of 32% W and a net to gross of 65% and each side
area has a width of 34% and a net to gross of 45%.
. . . .

Japan 807 directs one of ordinary skill in the art toward the claimed
invention because Japan 807 teaches toward reducing the negative
ratio of the central area 11 (increasing the net to gross of the central
area 11). The optimum net to gross across the tread for obtaining the
desired results of improved wear resistance and riding comfort could
have been determined . . .
(Compare Ans. 8, 9, and 17 with App. Br. 4-7 and Reply Br. 4-7)
ADDITIONAL PRINCIPLES OF LAW
“[D]iscovery of an optimum value of a result effective variable in a
known process is ordinarily within the skill of the art.” In re Boesch, 617
F.2d 272, 276 (CCPA 1980).

ANALYSIS AND CONCLUSION
Appellants argue that
Appellants have discovered a specific relationship between the first
and third regions of each lug that significantly increases a tire's lug
stability and load-carrying capacity without compromising other
attributes of the tire. (p. 2, lines 6-12; p. 12, lines 9-14). A person of
ordinary skill in the art would not be able to determine this specific
dimensional relationship from Japan 807 because of the inability to
accurately assign a net-to-gross ratio for portions of the side areas 12,
13. . . . Such a situation does not . . . establish a prima facie case of
obviousness.

(App. Br. 6-7).
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Appellants, however, do not specifically dispute the Examiner's
findings and determinations regarding Japan 807. (FF 4).
In this regard, given Factual Finding 4 above, JP 807 recognizes that
controlling the net-to-gross ratio across the lugs affects the wear resistance
and riding comfort of the tire (i.e., that the net-to-gross ratio is a result-
effective variable). Accordingly, we agree with the Examiner that it would
have been obvious to optimize the net-to-gross ratio across the lugs that
comprise the tread to suit the particular end use (i.e., improved wear
resistance and riding comfort) and thus achieve the claimed “first region
ha[ving] a net-to-gross ratio that is at least 29% greater than a net-to-gross
ratio of said third region” feature required by claims 1 and 5. See Boesch,
617 F.2d at 276.
Thus, it follows that the Examiner did not err in determining that
Japan 807 would have suggested a pneumatic tire comprising a “first region
ha[ving] a net-to-gross ratio that is at least 29% greater than a net-to-gross
ratio of said third region” as recited in claims 1 and 5 within the meaning of
§ 103. We further sustain rejections (2) and (3) rejecting claims 6, 12, and 20
for the reasons given above.
ORDER
For the above reasons, rejection (1)'s § 103 rejection and rejections (2)
and (3) are sustained and rejection (1)'s § 102 rejection is reversed.
Accordingly, the Examiner's decision is affirmed.
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TIME PERIOD
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(2009).
AFFIRMED

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